ROPES & GRAY LLP
PATENT DOCKETING 39/361
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Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Office Action Summary
Application No.
10/776,583
THUY-VI NGUYEN
Applicant(s)
LAX, MICHAEL
- The MAILING DATE of this communication appears on the cover sheet with the correspondence address ~
Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
1 )I3 Responsive to communication(s) filed on 23 June 2009 .
2a)|3 This action Is FINAL. 2b)\J This action Is non-final.
3) n Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.
Disposition of Claims
4) ^ Claim(s) 1-60 is/are pending in the application.
4a) Of the above claim(s) 44-60 is/are withdrawn from consideration.
5) n Claim(s) is/are allowed.
6) 13 Claim(s) ^43 is/are rejected.
?)□ Claim(s) is/are objected to.
8) 0 Claim(s) are subject to restriction and/or election requirement.
Application Papers
9) [II The specification is objected to by the Examiner.
10) 0 The drawing(s) filed on is/are: a)n accepted or b)n objected to by the Examiner.
Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1 .121 (d).
1 1) 0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
Priority under 35 U.S.C. § 119
12) 0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)n All b)n Some * c)^ None of:
1. n Certified copies of the priority documents have been received.
2. \Zi Certified copies of the priority documents have been received in Application No. .
3. n Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.
Application/Control Number: 10/776,583 Page 2
Art Unit: 3689
DETAILED ACTION
1 . This is in response to the applicant's communication filed on 23 June, 2009
wherein:
Claims 1-60 are currently pending
Claims 44-60 have been withdrawn;
Claims 1 , 23, 32 have been amended.
Independent claim 1 as on 23 June, 2009 is amended as follow:
An apparatus for use with a benefit denial system, said apparatus comprising:
a containing element configured to receive an asset, said asset comprising a
benefit for a user of said asset; and
an electrical circuit, enclosed within the containing element , comprising an
antenna, said circuit operatively associated with said containing element and configured
to communicate from inside the containing element, infomiation corresponding to said
assetj_to a receiver outside said containing element;
wherein said information is configured to be used by said benefit denial system
to provide said benefit to said user .
Application/Control Number: 10/776,583 Page 3
Art Unit: 3689
Claim Rejections - 35 USC § 112
2. The following is a quotation of the second paragraph of 35 U.S.C. 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.
Claims 1-31 are rejected under 35 U.S.C. 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention.
Independent claims 1 and 23 recites the last step " wherein said information is
configured to be used by said benefit denial system to provide said benefit to said user".
It is not clear how the communicated "information/data" can be configured to provide the
benefit to the user. For example, if the communicated information/data is a phrase
"purchasing a CD" by "John" then, how would this "phrase" are configured to provide the
benefit to the user?
Ciaim Rejections - 35 USC § 102
3. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -
(e) the invention was described in (1) an application for patent, published under section 122(b), by
another filed in the United States before the invention by the applicant for patent or (2) a patent
granted on an application for patent by another filed in the United States before the invention by the
applicant for patent, except that an International application filed under the treaty defined In section
351(a) shall have the effects for purposes of this subsection of an application filed In the United States
only if the international application designated the United States and was published under Article 21 (2)
of such treaty in the English language.
4. Claims 1-2, 5-19, 22-43 are rejected under 35 U.S.C. 102(e) as anticipated by
HOGEN ESCH (EP 1,225,585 A1) Publication date : 07/24/2002
Application/Control Number: 10/776,583 Page 4
Art Unit: 3689
As for independent claim 1 , HOGEN ESCH discloses an apparatus, said
apparatus comprising:
a containing element configured to receive an asset, said asset comprising a
benefit for a user of said asset; and
{see figure 1, pars. 0001-0002, 0011 wherein HOGEN ESCH discloses a CD or
DVD box (containing element) for storing information (benefit) carrier in the form of CD
or DVD} .
an electrical circuit, enclosed within the containing element , comprising an
antenna, said circuit operatively associated with said containing element and configured
to communicate from inside the containing element, information corresponding to said
assets to a receiver outside said containing element
{see figures 1-2, elements 22, 24, pars. 001 1 , 0014, 0022-0023 wherein HOGEN
ESCH discloses a transponder circuit (22), and a coil or antenna (24) are attached in
the CD box. Information stored in the identification label of the label (8) provided on the
CD or DVD are transferred (communicated) via the transponder circuit 22 (from inside
the box or containing element) to the noncontact radiofrequency antitheft system (18)
(to a receiver).
wherein said information is configured to be used by said benefit denial system
{see pars. Par. 0022-0023. 0027 disclose the information is configured for the
antitheft of the product or CD or DVD}.
Note: it appears independent lis an apparatus claim. In examination of the
apparatus claim, the claims must be structurally distinguishable from the prior art. While
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Art Unit: 3689
features of an apparatus claim may be recited eitlier structurally or functionally, claims
directed to an apparatus must be distinguished from the prior art in terms of structure
rather than function. See MPEP 2114. In re Schreiber, 128 F.3d 1473, 1477-78, 44
USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Apparatus claims cover what a device is, not
what a device does. Hewlett-Packard Co. vs. Bausch & Lomb Inc. (Fed. Circ. 1990).
Manner of operating the device or elements of the device, i.e. recitation with respect to
the manner in which a claimed apparatus is intended to be employed/used, does not
differentiate apparatus from the prior art apparatus. Ex parte Masham, 2 USPQ2d 1647
(BPAI, 1987).
Also, this is an apparatus claim and intended use limitation for the system/device
or apparatus, i.e. "for use with a benefit denial system. . . ; and " to be used by said
benefit denial system to provide said benefit to said usei" of the last step have no
patentable weight in an apparatus claim.
As for dep. claim 2, which discloses a locking element configured to lock the
containing element in a close state, this is taught in HOGEN ESCH, par. 0007.
As for dep. claim 5, which discloses the electrical circuit is affixed to the
containing element, this is taught in HOGEN ESCH, see figure 1, pars. 001 1, 0014,
0022-0023.
As for dep. claim 6, which deals with the feature said electrical circuit is
disposed inside said containing element when said containing element is closed; and
said electrical circuit is configured to communicate said information when said
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Art Unit: 3689
containing element is closed , this is taught in HOGEN ESCH, see figures 1-2, elements
22, 24, pars. 0011, 0014, 0022-0023.
As for dep. claim 7, which deals with the feature said circuit comprises a data
storage device, this is taught in HOGEN ESCH, see pars.0014, 0022-0025.
As for dep. claim 8, which deals with the feature, said circuit is further
configured to communicate said information when said asset is enclosed within said
containing element, this is taught in HOGEN ESCH, see pars. 0022-0025.
As for dep. claims 9-11, which deals with the feature said asset has a type; and
said element is configured to enclose no more than three assets of said type, no more
than two assets of said type , or no more than one asset of said type, this is taught in
HODE, {figures 1-2, pars. 0001-0002, 001 1} Furthermore, the term "type of asset" is not
a structural element or functional structure and has no patentable weigh in an apparatus
claim. See MPEP 2106.01.
As for dep. claims 12-16, which deals with the feature said information is
required by said system to provide said benefit e.g. executable computer program, a
game, audio data, visual data. It is noted that these features are deal with type of
benefit information/data which are considered as nonfunctional descriptive material and
carried no patentable weights in the system claim. See MPEP 2106.01.
As for dep. claims 17-18 deals with "the benefit data/information that are
inactive before said system receives a portion of said information; and said system is
configured to activate said data, the data are configured to be accessed using an
access device; the system is configured to provide after receiving said portion, a data
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Art Unit: 3689
key to said device, said l<ey configured to activate said data" are considered as thie
intended use which doesn't change the structure of the positively recited elements of a
containing element comprising a circuit and an antenna. Thus this intended use
limitations have no patentable weight in an apparatus claim. Furthermore, this type of
information are considered as nonfunctional descriptive material and carried no
patentable weights. See MPEP 2106.01.
As for claim 19, which deals with information comprise security data configured
to be communicated by a user and transaction data configured to be communicated by
the receiver" are considered as the intended use which doesnt change the structure of
the positively recited elements of a containing element comprising a circuit and an
antenna. Thus this intended use limitations have no patentable weight in an apparatus
claim. Furthermore, this type of information are considered as nonfunctional descriptive
material and carried no patentable weights. See MPEP 2106.01.
As for claim 22, which deals with type communication using a radio frequency
signal, this is fairly taught in MODES, see at least pars. 0070, 0012-0013.
As for independent claim 23, which discloses a container which carries the
similar structure element as independent claim 1 above. Therefore, it is rejected for the
same reason sets forth the rejected independent claim above.
More over. Note: it appears independent 22 is an apparatus claim. In
examination of the apparatus claim, the claims must be structurally distinguishable from
the prior art. While features of an apparatus claim may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the prior art in
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Art Unit: 3689
terms of structure rather than function. See IVIPEP 21 14. In re Schreiber, 128 F.3d
1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Apparatus claims cover
what a device is, not what a device does. Hewlett-Pacl<ard Co. vs. Bausch & Lomb Inc.
(Fed. Circ. 1990). Manner of operating the device or elements of the device, i.e.
recitation with respect to the manner in which a claimed apparatus is intended to be
employed/used, does not differentiate apparatus from the prior art apparatus. Ex parte
Masham, 2 USPQ2d 1647 (BPAI, 1987).
Also, this is an apparatus claim and intended use limitation for the system/device
or apparatus, i.e. "for use with a system for executing a conveyance of an interest in an
asset from a first party to a second partf ; and "wfiere said infonvation is configured to
be used by said system to execute said conveyance" have no patentable weight in an
apparatus claim.
As for dep. claims 24-25, which have the similar limitation as the rejected dep.
claims 6 and 8 above. Therefore, it is rejected for the same reason sets forth the
rejected dep. claims 6 and 8 as stated above.
As for dep. claims 26-27, which discloses the information is required by the
system to execute said conveyance is considered as the intended use which doesn't
change the structure of the positively recited elements of a container comprising a
circuit and an antenna. Thus this intended use limitations have no patentable weight in
an apparatus claim. Furthermore, this type of information is considered as
nonfunctional descriptive material and carried no patentable weights. See MPEP
2106.01.
Application/Control Number: 10/776,583 Page 9
Art Unit: 3689
As for dep. claim 28-29 which discloses wherein "an interest is an ownership of
interest and said interest comprise a right to use said asset" is considered as the
intended use which doesn't change the structure of the positively recited elements of a
container comprising a circuit and an antenna. Thus this intended use limitations have
no patentable weight in an apparatus claim.
As for the dep. claims 30-31 which discloses "the circuit is configured to
communicate said information before a third party surrenders said asset to said second
party, and the second party does not hold an ownership interest in said asset during
conveyance" is considered as the intended use which doesnt change the structure of
the positively recited elements of a container comprising a circuit and an antenna. Thus
this intended use limitations have no patentable weight in an apparatus claim.
As for Independent claim 32, IHOGEN ESCIH discloses a container, said
container comprising:
a containing element configured to receive an asset, said asset comprising a
benefit for a user of said asset; and
{see figure 1, pars. 0001-0002, 0011 wherein HOGEN ESCH discloses a CD or
DVD box (containing element) for storing information (benefit) carrier in the form of CD
or DVD} .
an electrical circuit, enclosed within the containing element , comprising an
antenna, said circuit operatively associated with said containing element and configured
Application/Control Number: 10/776,583 Page 10
Art Unit: 3689
to communicate from inside tlie containing element , information corresponding to said
assets to a receiver outside said containing element
{see figures 1-2, elements 22, 24, pars. 001 1 , 0014, 0022-0023 wherein HOGEN
ESCH discloses a transponder circuit (22), and a coil or antenna (24) are attached in
the CD box. Information stored in the identification label of the label (8) provided on the
CD or DVD are transferred (communicated) via the transponder circuit 22 (from inside
the box or containing element) to the noncontact radiofrequency antitheft system (18)
(to a receiver);
a circuit deactivator configured to interrupt electrical communication within said
circuit
{see figures 1-2, pars 0014, 0018-0022, 0029 discloses "the label 8 has been
deactivated, proceeds through the intermediacy of the transponder circuit 22 }.
As for claim 33, which deals with said electrical circuit is disposed inside said
containing element when said containing element is closed; and said electrical circuit is
configured to communicate said information when said containing element is closed,
this is fairly taught in HOGEN ESCH (see pars.0014, 0022-0023 }.
As for claim 34, which deals with the said circuit is configured to communicate
said information when said asset is enclosed within said containing element, this is fairly
taught in HOGEN ESCH, {see at least pars, see pars. 0022-0025}.
As for claim 35, which deals with the interrupt electrical signal communication
between two circuit devices, this is fairly taught in HOGEN ESCH, see figures 1-2, pars.
0022-0025, 0029.
Application/Control Number: 10/776,583 Page 11
Art Unit: 3689
As for claims 36-37, which deals with the first portion, comprises a data storage
device and second portion comprises an antenna, this is taught in HOGEN ESCH, see
figures 1-2, at least pars. 0022-0025, 0029.
As for claims 38-39, which deal with the deactivator is configured to interrupt
said electrical communication by physically separating said first and second portions of
said circuit, and manually configuration, this is fairly taught in this is taught in HOGEN
ESCH, see figures 1-2, at least pars. 0022-0025, 0029.
As for claims 40-43, which deal with "the information is configured to be used by
a benefit denial system to provide to an asset user access to a benefit and the
information is required by said benefit denial system to provide said access" is
considered as the intended use which doesn't change the structure of the positively
recited elements of a containing element comprising a circuit, an antenna and a circuit
deactivator. Thus this intended use limitations have no patentable weight in an
apparatus claim. Furthermore, this type of information are considered as nonfunctional
descriptive material and carried no patentable weights. See MPEP 2106.01 .
Application/Control Number: 10/776,583 Page 12
Art Unit: 3689
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:
(a) A patent may not t>e obtained thougti ttie invention is not identically disclosed or described as set
forth in section 1 02 of tfiis title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.
6. Claims 3, 20-21 is rejected under 35 U.S.C. 103(a) as being unpatentable over
HOGEN ESCH (EP 1,225,585 A1) Publication date ; 07/24/2002
As for dep. claim 3, HOGEN ESCH discloses the claimed invention as stated
above. For example, HOGEN ESCH discloses the electrical circuit is affixed in side the
box, or containing element. However, HOGEN ESCH doesn't mention about the
position of the circuit is affixed to the locking containing element. It would have been
obvious to one of ordinary skill in the art to locate/mount the electronic circuit feature
either in the container or attach to the locking element of the container or any other
place in the device or container to achieve the same results such as preventing the theft
access in side the container or using the item/asset in side the container will be denied .
As for claims 20-21, HOGEN ESCH discloses the claimed invention as stated
above. For example, HOGEN ESCH discloses a CD or DVD box (containing element).
HOGEN ESCH doesn't mention about the material that made the CD or DVD box.
However, these type of optical opaque material is old and well known in the art. It would
have been obvious to one of ordinary skill in the art to recognize the CD or DVD or the
video tape box is made by the optically opaque material.
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Art Unit: 3689
7. Claim 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over HOGE
ESCH and in view of LAX (US 5,598,728)
As for dep. claim 4, which deals with the feature said locking element is
removable from said containing element. MODES discloses all the limitation as stated
above, MODES further disclose the security container/device having a locking feature
except for the "the locking feature is removable". LAX disclose a similar security
device/case/package having a removable locking element {see figure 4, col. 3, liens 29-
30}. It would have been obvious to one of ordinary skill in the art to modify the system
of MODES to include the removable locking element as taught by LAX for the benefit of
customer convenience usage.
Response to Arguments
8. Applicant's arguments with respect to claims 1-43 have been considered and are
responded as follows:
1) In response to the 112 rejection, applicant's comment that "functions" of the
information or "intended use" such as " activation information" can be configured to
provide the benefit to the user. Again, data are data and they are represented by bits
010101 on a computer for data processing or communication exchange. One cannot
configure the data to be used by said "benefit denial system" to provide benefit to the
user as shown in claim 1 . For example, the term "activation" information or data, they
are considered as non-functional descriptive material (NFDM) on the data of "...", thus
having no patentable weight. The mere insertion of "activation" data over "data" does
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Art Unit: 3689
not "impart functionality when employed as a computer component ", thus haying no
patentable weight.
See MPEP 2106.01 "Descriptiye material can be characterized as either
"functional descriptiye material" or "nonfunctional descriptiye material." In this context,
"functional descriptive material" consists of data structures and computer programs
which impart functionality when emploved as a computer component . (The definition of
"data structure" is "a physical or logical relationship among data elements, designed to
support specific data manipulation functions." The New IEEE Standard Dictionary of
Electrical and Electronics Terms 308 (5th ed. 1993).) "Nonfunctional descriptiye
material" includes but is not limited to music, literary works, and a compilation or mere
arrangement of data.
Furthermore, Claim 1 is an apparatus claim which requires "structural elements"
or structures. The "wherein" clause with intended use clause "is configured" and "to be
used" and "to provide" do not have any structural limitations and should not haye any
patentable weight in an apparatus claim.
2) In response to the 102/103 rejections, the arguments are moot in view of the
new grounds of rejections which are caused by applicant's amendment of the claims.
Application/Control Number: 10/776,583
Art Unit: 3689
Page 15
Conclusion
Applicant's amendment necessitated thie new ground(s) of rejection presented in
this Offlce action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1 .136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later
than SIX MONTHS from the date of this final action.
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Art Unit: 3689
Any inquiry concerning tliis communication or earlier communications from thie
examiner should be directed to Thuy-Vi Nguyen whose telephone number is 571-270-
1614. The examiner can normally be reached on Monday through Thursday from 8:30
A.M to 6:00 P.M.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Janice Mooneyham can be reached on 571-272-6805. The fax phone
number for the organization where this application or proceeding is assigned is 571-
273-8300.
Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T. N./
Examiner, Art Unit 3689
/Tan Dean D. Nguyen/
Primary Examiner, Art Unit 3689
10/21/09